ACIP: Post grant patent enforcement

ACIP’s interim report on Post-Grant Patent Enforcement Strategies is now available on the internet (pdf).

The main recommendation is that:

Proposal 1: That IP Australia establish an IP dispute resolution centre along the lines of WIPO’s Arbitration and Mediation Center, which in the first instance focuses on patent disputes. Funding for the centre should be on a “user pays” basis.

A number of “implementation” recommendations hang off that. For example:

Proposal 2: That IP Australia establish a validity and infringement opinion service (taking into account the needs of SMEs), along similar lines to that provided by the UKIPO, and incorporated within the IP dispute resolution centre.

Proposal 4: That IP Australia establish, within the IP dispute resolution centre, a determinative ADR process in the form of a Patent Tribunal along the following lines:

(a) each Tribunal hearing panel to comprise up to 3 people, integrating legal and technical expertise;

(b) Tribunal hearing panel members to be drawn from the register of experts established under Proposal 3;

(c) patent attorneys to have a right to appear;

(d) the Tribunal to have more streamlined procedures and simplified evidentiary requirements;

(e) the Tribunal to take a pro-active and inquisitorial role;

(f) mechanisms be introduced to encourage parties to comply with the Tribunal’s determinations, and to discourage parties from using the courts instead of the Tribunal where it would be appropriate to do so; and

(g) that the effectiveness of the Patent Tribunal be monitored from its date of establishment.

Also, there should be a power of customs’ seizure (as already exist for copyright and trade marks).

Submissions need to be in by Wednesday 30 September 2009.

Interim Report (pdf); press release (pdf too)

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